Responding to Australian and New Zealand Patent Office deadlines during the COVID-19 outbreak

A number of Patent Offices around the world are making special arrangements to assist applicants that are impacted by the COVID-19 outbreak, such as extending deadlines and/or waiving certain fees. At this stage, the Australian and New Zealand Intellectual Property Offices have not advised of any changes to their normal processes or deadlines, and as a consequence business continues as close to normal as possible.

Australian and New Zealand legislation provides generous provisions for obtaining extensions of time when a deadline is missed under certain circumstances, noting that any extension request must be dealt with in a timely manner and will be considered on a case-by-case basis. If a deadline is not (or cannot) be met due to the COVID-19 outbreak, a request to extend the deadline or time period may be made and will require evidence in support of the extension, outlining how the COVID-19 outbreak interfered (or will likely interfere) with responding in time.

Applicants should be mindful that not all deadlines or time periods are extendible under these provisions. If you become aware of a case that requires an extension due to the impacts of COVID-19, please contact us.

We have briefly summarised below the the position of the Australian Intellectual Property Office (IP Australia) and the New Zealand Intellectual Property Office (IPONZ) as of 1 April 2020. We will endeavor to provide updates as soon as they become available.

IP Australia

IP Australia has set up a dedicated page on their website providing the most up to date information: community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak

As of 1 April 2020:

• IP Australia continues to provide its services. All staff are working remotely, so only online services are available.

• All hearings are being conducted by video conferencing, telephone or written submissions.

• Where an applicant for a patent, trade mark or design cannot carry out an action within time due to the COVID-19 outbreak, an extension of time may be available, noting that where IP Australia has discretion it will seek to apply it. Requests for extensions of time need to be accompanied by a declaration setting out how the COVID-19 outbreak interfered with responding in time. Requests for waiver or refund of the fee for the extension of time will be considered on a case by case basis as per IP Australia’s current practice.

• Where a PBR applicant cannot carry out an action within time due to the COVID-19 outbreak, it may be possible to defer the action. Requests for a deferral need to be accompanied by a statement setting out how the COVID-19 outbreak interfered with responding in time. Until further notice, PBR Examiners are not conducting examination of field trials for PBR purposes, where domestic flights or overnight stays are involved.

• The Australian Cultivar Registration Authority (ACRA) is closed for receiving plant specimens until further notice. PBR Applicants and Qualified Persons of varieties originating from Australian native plants who are required to submit a plant specimen to the ACRA are requested to either press the specimen themselves and hold off submitting until notified or wait and collect the specimen at a future date when the ACRA has re-opened.

Intellectual Property Offices of New Zealand (IPONZ)

All IPONZ services are currently operating as usual. Most staff continue to work remotely.

IPONZ advises that if circumstances related to the COVID-19 outbreak have affected or are affecting the ability of an applicant to respond by a deadline, an extension of time should be requested. IPONZ have committed to treat any such requests favourably.

This article was written by Sarah Couper.

If you have any specific enquiries about this article, please contact Paul Jones or Debra Tulloch.

Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.